Noonan v. Chester Park Athletic Club Co.

• Decision Date: 02 January 1900
• Docket Number: 668.
• Citation: 99 F. 90
• Parties: NOONAN v. CHESTER PARK ATHLETIC CLUB CO. et al.
• Court: U.S. Court of Appeals — Sixth Circuit

99 F. 90

NOONAN v. CHESTER PARK ATHLETIC CLUB CO. et al.

No. 668.

United States Court of Appeals, Sixth Circuit.

January 2, 1900

This is a bill to restrain the infringement of patents No. 332,762 and No. 367,252, both issued to La Marcus A. Thompson. The first is for certain improvements in gravity switch-back railways, and the second is for improvements in elevated gravity and cable railroads. The complainant, Noonan, is the assignee of Thompson of the exclusive right under said patents of a limited territory, which includes the county of Hamilton, in the state of Ohio. The defendants are the Chester Park Athletic Club Company, a corporation of the state of Ohio, La Marcus A. Thompson, the patentee under whom complainant claims, C. M. Lawson, Luke Lilley, and John Devere, all of whom are stockholders and managing officers of the defendant corporation. The defendants denied infringement, and upon this issue the circuit court dismissed the bill, and the complainant appealed.

George J. Murray, for appellant.

W. W Wood, E. E. Wood, and Thomas L. Pogue, for appellees.

Before TAFT, LURTON, and DAY, Circuit Judges.

LURTON Circuit Judge, after making the foregoing statement of facts .

1. The evidence by which it is sought to connect the defendants Lilley and Devere with the purchase by complainant of an interest under the Thompson patents involved, for the purpose of estopping them, and through them the corporation of which they are members, is insufficient to in any way affect the disposition of any question involved in the case.

2. Thompson, the inventor and assignor of complainant, is the president of the defendant corporation, and is undoubtedly affected by the estoppel growing out of his assignment. Without deciding, we shall, for the purposes of this case assume that the corporation is affected by the estoppel which prevents Thompson from denying the validity of the patents which he has assigned, and apply to it the same principles which would affect him if he were the sole defendant. It seems to be well settled that the assignor of a patent is estopped from saying his patent is void for want of novelty or utility, or because anticipated by prior inventions. But this estoppel, for manifest reasons, does not prevent him from denying infringement. To determine such an issue, it is admissible to show the state of the art involved, that the court may see what the thing was which was assigned, and thus determine the primary or secondary character of the patent assigned, and the extent to which the doctrine of equivalents may be invoked against an infringer. The court will not assume against an assignor, and in favor of his assignee, anything more than that the invention presented a sufficient degree of utility and novelty to justify the issuance of the patent assigned, and will apply to the patent the same rule of construction, with this limitation, which would be applicable between the patentee and a stranger. Babcock v. Clarkson, 11 C.C.A. 351, 63 F. 607; Ball & Socket Fastener Co. v. Ball Glove-Fastening Co., 7 C.C.A. 498, 58 F. 818; Cash-Carrier Co. v. Martin, 14 C.C.A. 642, 67 F. 786; Chambers v. Crichley, 33 Beav. 374; Construction Co. v. Stormberg (C.C.) 66 F. 550; Clark v. Adie, 2 App.Cas. 423, 426. This was the rule applied by the court below, and is the principal ground of objection to the decree finding that the assigned patents, when limited by the previous state of the art, had not been infringed.

3. The defendant Thompson, in 1897, constructed for the complainant an elevated gravity and cable railway, according to the claims of his patent No. 367,252, and assigned to him the exclusive right under that patent, as well as under patent No. 332,762, within three counties in the state of Kentucky and two in the state of Ohio. Subsequently, Thompson, with others, organized the Chester Park Athletic Association, and sought to obtain from the complainant a license to construct and operate a similar railway upon the property of the association which was within the territory assigned to complainant. The parties could not agree upon terms, and thereupon a railway of similar general character and uses was constructed under plans devised by the defendant Luke Lilley, who subsequently applied for and obtained a patent for his structure, being patent No. 549,700, of March 30, 1897. The contention is that this 'Lilley Electric Pleasure Railway,' as it is styled in the patent to Lilley, infringes the combinations covered by the two patents to Thompson so assigned to complainant.

At the time Thompson assigned the patents here involved to the complainant, he was the inventor and patentee under two other patents involving the same general subject-matter, and this fact was known to complainant. These additional patents were No. 310,966, for a roller-coaster structure, and No. 348,796, for a pleasure cable railway. These patents Thompson declined to assign to complainant, though solicited to do so. These two unassigned patents become of material importance when we come to determine the scope of the inventions covered by the two patents which were assigned. The earlier of the two patents assigned is No. 332,762. The claims said to be infringed by the Lilley patent are Nos. 1 and 2, and are as follows:

'(1) In a gravity switch-back railway, the combination, with the trestlework so constructed as to form a series of descending and ascending planes, of the longitudinal stringers for the reception of the rails, the guardways or stringers for preventing the cars from jumping the tracks, and the brake-sliding ways or stringers, substantially as and for the purposes described.

'(2) In a gravity switch-back railway, the combination, with the undulating trestlework having thereon the longitudinal trackways and rails, of the guard-stringers, and brake-slide stringers contiguous thereto, of a car having brake shoes which engage with said brake stringers through the operation of a lever, substantially as and for the purposes set forth.'

The first two of the elements in claim No. 1 are the undulating trestle with longitudinal stringers upon which the rails are mounted. These elements constitute the entire subject of the earliest patent to Thompson, being patent No. 310,966, for a roller-coasting structure. Such structures were not new. Two patents are exhibited covering the same class of pleasure railways,-- one to T. Alexander, of December 26, 1882, for an artificial sliding hill, No. 269,554, and another to J. Pusey, for a coasting course, No. 318,026. The other elements in the first claim cover means for stopping and controlling the cars. These elements are guard stringers inside the track rails for preventing the cars from jumping the track, and 'brake-sliding ways or stringers' for the car brakes or shoes to slide upon for aiding in the stoppage of the car. The second claim is identical with the first, except that it includes, as another element, 'a car having brake shoes which engage with the said brake stringers through the operation of a lever.'

In both patents No. 310,966 and No....